Oregon Catholic Press v. Ambrosetti
218 F. Supp. 3d 1158
D. Or.2016Background
- OCP licensed dozens of songs to ILP under a 2009 agreement, amended in 2011 to permit "new editions" including an added "Order of Mass," and a separate 2014 agreement and a 2010 license covering limited publications.
- ILP published a first edition of the Saint Augustine Hymnal in 2010 and later published a second edition that included 74 OCP songs; OCP contends the second edition exceeded the licensed scope.
- ILP published a 2014 songbook titled "You Are Holy," which included 12 OCP songs; OCP alleges two songs—"Glorious God" and "Bright As the Sun"—were unlicensed in that book.
- Defendants argued (a) the 2011 addendum allowed the second edition, (b) "Bright As the Sun" was licensed because "You Are Holy" is the retitled "Living World," (c) "Glorious God" was unregistered or otherwise impliedly licensed/waived.
- OCP sued ILP for direct infringement and sued Lamb Publications and ILP President Vince Ambrosetti for contributory and vicarious liability based on publishing/distribution and control/financial benefit.
- The court evaluated a Rule 12(b)(6) motion (accepting alleged facts, declining to resolve contract ambiguities or disputed external emails) and considered whether OCP plausibly pleaded infringement and secondary liability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ILP exceeded its license by publishing a second edition of the Hymnal | 2011 addendum only allowed republishing the original edition with the added "Order of Mass"; second edition was unauthorized | The 2011 addendum permits new editions generally; "versions"/"editions" are interchangeable so second edition was allowed | Denied dismissal — OCP plausibly alleged ILP exceeded the license; fact issue remains (survives 12(b)(6)) |
| Whether OCP pleaded registration for "Glorious God" (prerequisite to suit) | OCP failed to allege registration in the amended complaint but says it submitted an application | Defendants moved to dismiss for lack of registration | Granted dismissal of current claim but OCP given leave to amend to allege submission/application for registration |
| Whether "Bright As the Sun" was licensed when published in "You Are Holy" (retitled work defense) | License covered publication titled "Living World"; printing in "You Are Holy" exceeds scope | ILP says "You Are Holy" is merely a title change of "Living World," thus covered | Denied dismissal — OCP plausibly alleged infringement; question of whether works are the same is factual |
| Whether Lamb and Ambrosetti are secondarily liable (contributory/vicarious) | Lamb materially contributed/was publisher-distributor; Ambrosetti, as ILP president, had control and derived financial benefit | Defendants argued no direct liability for ILP means no secondary liability | Denied dismissal — OCP plead sufficient facts to plausibly allege contributory and vicarious liability |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard; plausibility required)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility and factual pleading limits)
- Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th Cir. 1999) (scope-limited license may permit infringement claim)
- A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (direct infringement prima facie elements)
- MDY Indus., LLC v. Blizzard Entm’t, Inc., 629 F.3d 928 (contributory/vicarious infringement standards)
- Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (control element for vicarious liability)
- Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (vicarious liability by profiting while declining to stop infringement)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (registration prerequisite principles)
- Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612 (9th Cir. approach to registration: application receipt suffices)
- Parrino v. FHP, Inc., 146 F.3d 699 (court may consider undisputed, relied-upon documents on 12(b)(6))